Other Barks & Bites for Friday, March 24: Non-DOCX Fee Delayed Further; SCOTUS Petition Says Hirshfeld’s Review of PTAB Decision Violated Federal Vacancies Reform Act; Moderna CEO Grilled by Senate Committee over COVID Vaccine Price Hike

Bite (noun): more meaty news to sink your teeth into.

Bark (noun): peripheral noise worth your attention.

BitesThis week in Other Barks & Bites: the U.S. Supreme Court heard oral arguments in two cases related to trademark law; the USPTO has delayed the planned Non-DOCX filing surcharge fee again; Moderna CEO faces Senate HELP Committee; the Indian Patent Office denies Johnson & Johnson a patent extension for a tuberculosis drug; and one of The Isley Brothers files a trademark lawsuit against his brother.


USPTO Announces Non-DOCX Filing Fee is Delayed Again

The United States Patent and Trademark Office (USPTO) said Friday that the effective date of the filing fee for patent applications that are not filed in DOCX format will be delayed until June 30, 2023. According to the unpublished Final Rule, “[t]he change to the effective date will provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format before the new fee is effective.” The Rule also noted that notice and comment would be “impracticable and contrary to the public interest” and that “immediate implementation of the delay in effective date of the fee is in the public interest because it will provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format before the new fee in § [1.]16(u) is effective.”

CAFC Denies MIT’s Mandamus Petition to Terminate Ford IPR

On Thursday, March 23, the United States Court of Appeals for the Federal Circuit (CAFC) denied MIT’s petition for writ of mandamus in its patent case against Ford. The case began in 2020 when three MIT researchers sued Ford for infringing on two of its patents. Subsequently, Ford launched an inter partes review (IPR) in which the Patent Trial and Appeal Board (PTAB) initially denied institution, but after a district court ruling, the PTAB agreed to rehear. The MIT researchers then filed its petition to the CAFC challenging Ford’s timeliness and asking the CAFC to direct the PTAB to terminate the proceeding. But, the CAFC ruled the petition “has failed to show entitlement to the extraordinary remedy of a writ of mandamus.”

Roku Loses Petition to Transfer Patent Dispute to California Court

On Thursday, March 23, the CAFC denied Roku’s petition asking the court to direct a Texas district court to vacate its decision denying Roku’s bid to move its patent dispute with IOENGINE to a California district court. IOENGINE has accused Roku of infringing on two of its patents related to portable devices. The Texas district court found no private or public interest factor that favored moving the case to California. The CAFC said the denial of transfer was not a clear abuse of discretion especially “given the sources of proof and potential witnesses in the Western District of Texas.”

Petitioner Challenges Hirshfeld’s Authority Under Arthrex at SCOTUS

A petition filed with the U.S. Supreme Court on Wednesday, March 22, by Fall Line Patents asks the Justices to review whether then-U.S. Patent and Trademark Office (USPTO) Commissioner for Patents, Drew Hirshfeld’s, “exercise of the Director’s authority pursuant to an internal agency delegation violated the Federal Vacancies Reform Act.”

The petition stems from a Patent Trial and Appeal Board (PTAB) decision invalidating Fall Line’s patents in 2017. Fall Line eventually appealed that ruling to the Supreme Court and the petition was granted, but upon remand to the USPTO for review by the Director, Fall Line says that Hirshfeld’s title of “performing the functions and duties of the Director” wasn’t sufficient to provide the review to which it was entitled by a “presidentially appointed, Senate-confirmed officer at the PTO.”

SCOTUS Hears Oral Arguments in Poop-Themed Dog Toy Trademark Case

On Wednesday, March 22, the U.S. Supreme Court held a hearing in Jack Daniel’s v. VIP Products, a case that has implications for the First Amendment and trademark law. During the oral arguments, the Supreme Court Justices expressed skepticism that the product in question, VIP’s toy dog which mimics a Jack Daniel’s bottle represents a non-commercial use. The Justices also seemed to suggest to both parties that there might be a simpler way to resolve this particular case than either party has proposed thus far. For full coverage of the hearing check out this article.

USPTO Reduces Patent Fees for Small Businesses

On Wednesday, March 22, the United States Patent and Trademark Office published a final rule to the Federal Register that will reduce patent fees for small and micro businesses. The new rule is part of the Unleashing American Innovators Act of 2022 (UAIA), which became law in late 2022. Small businesses that qualify will see fee discounts increase from 50% to 60%, and micro entities can enjoy a discount increase from 75% to 80%. The discounts apply to fees related to filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

Moderna CEO Defends COVID Vaccine Price Hike While Grilled Before Senate Committee

On Wednesday, March 22, Moderna CEO Stéphane Bancel defended his company’s planned price hike of the COVID vaccine before the Senate Committee on Health, Education, Labor, and Pensions. Moderna has faced widespread criticism after Bancel said the company might quadruple the price of the COVID vaccine. United States senators and other critics have pointed to the public funds that Moderna has received and the company’s record profits as reasons the pharmaceutical company should keep the cost of the vaccine low. “They [Moderna] are thanking the taxpayers of America by proposing to quadruple the price of the COVID vaccine to as much as $130 once the government stockpile runs out – at a time when it costs just $2.85 to manufacture that vaccine,” said the committee chairman Senator Bernie Sanders (I-VT) in his opening statements.

SCOTUS Judges Asked to Consider Extraterritorial Application of Lanham Act

On Tuesday, March 21, the U.S. Supreme Court heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc., a case asking the Court whether the CAFC erred in its application of the Lanham Act extraterritorially to Abriton’s foreign sales. Overall, the justices appeared interested in considering the need for a newer, narrower test that would better apply to the modern world of e-commerce. For full coverage of the hearing and reactions from IPWatchdog readers, click here.


TTAB to Begin Final Pretrial Conference Pilot

The USPTO’s Trademark Trial and Appeal Board (TTAB) has launched a pilot program to employ final pretrial conferences in some trial cases, according to a Friday, March 24, announcement. The Pilot will begin on April 1, 2023, and purportedly aims to: “Save the parties and the TTAB time and resources” and “foster the effective and efficient presentation of evidence. “This process will help the TTAB manage and streamline proceedings, as part of the USPTO’s efforts to innovate processes for efficiency,” said the USPTO press release. More information is available at the TTAB Final Pretrial Conference Pilot webpage.

Indian Patent Office Rejects J&J’s Patent Extension for Tuberculosis Drug

On Thursday, March 23, the Indian Patent Office issued a ruling denying Johnson & Johnson’s patent extension for the tuberculosis drug bedaquiline. Johnson & Johnson’s patent will expire in July. Two tuberculosis survivors launched the successful patent challenge in 2019 which will allow manufacturers to produce generic versions of the drug. “We are thrilled to see that our attempt to break the monopoly of a pharmaceutical corporation over this lifesaving drug has been successful,” Nandita Venkatesan, one of the petitioners and tuberculosis survivors told Doctors Without Borders.

Amcor and Nfinite Announce Joint Research Agreement

On Wednesday, March 22, responsible packaging company Amcor and advanced material company Nfinite announced a joint research agreement that will validate Nfinite’s nanocoating technology to enhance both recyclable and compostable packaging. The two firms will combine Nfinite’s coating technology with Amcor’s recyclable and compostable packaging

ITC Sides with Roomba, Bans Imports of SharkNinja Robot Vacuums

On Tuesday, March 21, the U.S. International Trade Commission (ITC) issued a notice banning imports of certain SharkNinja robot vacuums. The ITC came to the decision after determining that SharkNinja infringed on two patents from iRobot, the maker of the Roomba vacuum cleaner. The patent dispute began in 2019 when iRobot filed the complaint with the ITC in tandem with a lawsuit. The ITC’s Determination resulted in a Limited Exclusion Order.

Rudolph Isley Sues Brother and Fellow Member of The Isley Brothers Over Trademark Dispute

On Monday, March 20, Rudolph Isley filed a lawsuit against his brother Ronald accusing him of improperly filing “The Isley Brothers” trademarks as the sole owner. In the lawsuit, Rudolph’s lawyers argue that the pair of brothers should have equal ownership of the trademark. As part of the lawsuit, he is seeking 50% of the profits that his brother has thus far made from the trademark.

This Week on Wall Street

The Fed Raises Interest Rates to 5%

On Wednesday, March 22, the Federal Reserve announced an interest rate hike from 4.75% to 5%. Some expected the rate hike to be delayed after the high-profile collapse of several banks including Silicon Valley Bank, however, the Federal Reserve pushed forward in hopes of reducing inflation. Inflation was down to 6% in February after reaching a high of around 9.1% last July.

Amazon Rolls Out Palm Reading Payment Method at Panera Bread

On Wednesday, March 22, Amazon announced in a press release that Panera Bread would be rolling out a palm reading payment option in several St. Louis locations in collaboration with the tech giant. This is Amazon’s first implementation of Amazon One, the company’s palm-reading technology, in a national chain restaurant. According to the companies, the technology will allow customers to pay by scanning their palm. “We are excited to deploy Amazon One in our restaurants because we want to deliver a frictionless and personalized loyalty experience for our guests,” said Niren Chaudhary, CEO of Panera Bread.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2022 are announcing quarterly earnings next week (2022 rank in parentheses):

  • Monday: None
  • Tuesday: Micron Technology (17)
  • Wednesday: None
  • Thursday: None
  • Friday: None



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Join the Discussion

One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    March 24, 2023 06:37 pm

    “ITC Sides with Roomba, Bans Imports of SharkNinja Robot Vacuums”

    Does this mean that iRobot has . . . jumped the Shark?

    “Amazon Rolls Out Palm Reading . . .”

    And the palm reading industry will never be the same.

    . . . jus’ sayin . . .